Patent Law

Gamed

By Gary Odom and Jordan Kuhn

Paul J. Bryan filed a "patent application [which] describes a 'game board and game having a touring band theme.'" He claimed "a game board and game." The examiner found an obvious combination of "a musical band-themed board game with nearly the exact structure that Mr. Bryan claimed." The examiner's rejection was upheld on BPAI appeal. Bryan took it to the CAFC. Apparently, without legal advice.

In Paul J. Bryan (CAFC 2008-1461) non-precedential

On appeal, Mr. Bryan... reiterates the same primary argument that he made to the Board--that the various "printed matter" indicia on his game cards and game board are functionally related to the structural elements of his claimed game apparatus. On this basis, Mr. Bryan argues that Board consequently erred in ultimately determining that the printed matter could not patentably distinguish his claimed invention from the prior art. Specifically, according to Mr. Bryan, the printed matter on his game cards allow the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from the other"; and "enable[ ] the cards to be traded and blind drawn."

Because there is no "new and unobvious functional relationship between the printed matter and the substrate," we agree with the Board that the printed matter in Mr. Bryan's claims cannot render his claimed structure unobvious. In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). We therefore affirm the Board's decision... Mr. Bryan emphasizes that the printed matter set out in the claims--e.g., the "Consequence," "Band Member," and "Band Equipment" language--is the distinguishing feature over the prior art. This language and the substance of the printed matter, however, cannot impart patentability, as it is "'useful and intelligible only to the human mind.'" In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Indeed, the printed matter does not depend on the game's structural elements, and the game's structural elements do not depend on the printed matter. See Ngai, 367 F.3d at 1339 ("[T]he printed matter in no way depends on the kit, and the kit does not depend on the printed matter."). Thus, the printed matter does not exploit, or interrelate with, the underlying structural elements and, therefore, is not "functionally related to the substrate." See id.

While Mr. Bryan asserts that the printed matter is functionally related because, for example, it allows the cards to be "collected, traded, and drawn" during game play, these types of arguments do not pertain to what he claims and seeks to patent--the structure of the game apparatus. Rather, these arguments pertain to the patentability of methods or processes of playing the game, which are irrelevant to the apparatus claims at issue. Indeed, if we were to accept Mr. Bryan's arguments, it seems anyone could patent the structure of a pre-existing game simply by changing the game's theme without changing its structure. See Ngai, 367 F.3d at 1339 ("If we were to adopt [the applicant's] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.").

Affirmed.

Full post as published by The Patent Prospector on April 01, 2009 (boomark / email).